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`Filed: May 12, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`ZTE (USA) INC.,
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`PETITIONER,
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`V.
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`BELL NORTHERN RESEARCH, LLC,
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`PATENT OWNER.
`___________________
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`Case No. IPR2019-01365
`U.S. Patent No. 7,039,435
`___________________
`
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`PATENT OWNER’S MOTION TO SEAL
`UNDER 37 C.F.R. § 42.54
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`
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`I.
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` INTRODUCTION
`Pursuant to 37 CFR § 42.14 and 42.54 and the proposed Modified Protective
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`Order filed in this proceeding on April 14, 2020 (Paper 16) (currently pending the
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`Board’s review), Patent Owner Bell Northern Research, LLC respectfully submits
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`this Motion to Seal Exhibits 2024, 2025, and 2027 and a portion of Patent Owner’s
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`Response that refers to the contents of those exhibits. Patent Owner submits that
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`good cause exists for placing these exhibits and the corresponding portion of the
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`Response under seal.
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`II. APPLICABLE LEGAL PRINCIPLES FOR SEALING
`CONFIDENTIAL INFORMATION
`There is a strong public policy for making all information filed in a
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`quasijudicial administrative proceeding open to the public, especially in an inter
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`partes review which determines the patentability of claims in a patent and
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`therefore affects the rights of the public. See St. Jude Medical, Cardiology
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`Division, Inc. v. Volcano Corp., IPR2013-00258, Paper 28 at 2 (PTAB Aug. 12,
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`2013). Under 35 U.S.C. § 316(a)(1), the default rule is that all papers filed in an
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`inter partes review are open and available for access by the public; and a party
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`may file a concurrent motion to seal and the information at issue is sealed pending
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`the outcome of the motion. Id.
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`However, the Board permits the protection of certain “confidential
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`information.” See 35 U.S.C. § 316(a)(7) (“The Director shall prescribe regulations
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`1
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`
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`-- … providing for protective orders governing the exchange and submission of
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`confidential information”). Id. In that regard, the Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012), provides:
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`The rules aim to strike a balance between the public’s interest in
`maintaining a complete and understandable file history and the
`parties’ interest in protecting truly sensitive information.
`* * *
`Confidential Information: The rules identify confidential
`information in a manner consistent with Federal Rule of Civil
`Procedure 26(c)(1)(G), which provides for protective orders for
`trade secret or other confidential research, development, or
`commercial information. § 42.54.
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`See also Office Patent Trial Practice Guide, 77 Fed. Reg. 64280 (November,
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`2019) at 19-20 (“A party may file a motion to seal where the motion contains a
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`proposed protective order, such as the default protective order in Appendix B… ,
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`protective orders may be issued for good cause by the Board to protect a party
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`from disclosing confidential information”).
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`The standard for granting a motion to seal is “for good cause.” 37 C.F.R. §
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`42.54.
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`2
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`
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`III. DOCUMENTS TO BE SEALED
`A. Exhibits 2024 and 2027
`Exhibit 2024 is a patent license agreement between LSI Logic Corp. and LG
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`Electronics dated 2013. Exhibit 2027 is a patent license agreement between Bell
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`Northern Research, LLC (“BNR”) and Huawei entities from 2019.
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`These licenses are confidential business information, some of which now
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`belongs to third party Broadcom Inc. and have been protected as such throughout
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`this proceeding and all related proceedings of which BNR is aware. Good cause
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`exists to seal the these exhibits because public disclosure of the information
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`contained in them risks harming each of the licensees/counterparties to the
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`underlying agreement. The confidential portions of the agreements include details
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`about what the companies agreed to license, under which terms, and other
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`confidential business information that could adversely impact the business of these
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`companies; for example, in these companies’ ongoing or future licensing
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`negotiations with other entities.
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`B. Exhibit 2025
`Exhibit 2025 is the Declaration of Chad Hilyard, General Counsel of Bell
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`Northern Research, LLC and former in-house lawyer for Agere Systems, Inc. and
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`LSI Logic Corporation (“LSI”). Mr. Hilyard testifies, based on personal
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`knowledge, regarding the contents of various license agreements between LSI and
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`other parties, as well as agreements between BNR and other parties. The licenses
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`3
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`
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`are confidential business information, some of which now belongs to third party
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`Broadcom Inc. and have been protected as such throughout this proceeding and all
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`related proceedings of which BNR is aware. Good cause exists to seal the
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`declaration because public disclosure of the information contained in Mr. Hilyard’s
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`declaration risks harming each of the licensees/counterparties to the underlying
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`agreement. The confidential portions of the agreements include details about what
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`the companies agreed to license, under which terms, and other confidential
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`business information that could adversely impact the business of these companies;
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`for example, in these companies’ ongoing or future licensing negotiations with
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`other entities.
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`C. Patent Owner Response
`Portions of the Patent Owner Response specifically reference and quote the
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`contents of Exhibits 2024 and 2027, which are described above. Thus, for the same
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`reasons set forth above with respect to these exhibits, good cause exists to seal the
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`limited portions of the Patent Owner Response in which these references or
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`quotations are made.
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`IV. CERTIFICATION OF NON-PUBLICATION
`On behalf of Patent Owner, the undersigned counsel certifies the information
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`sought to be sealed has not been published or otherwise made public. Further, the
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`confidentiality of this information has been consistently maintained by the Patent
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`4
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`
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`Owner, Broadcom, LG and Huawei during this proceeding, and any related
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`proceedings.
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`V. GOOD CAUSE FOR SEALING THE IDENTIFIED DOCUMENTS
`When enacting inter partes reviews (“IPRs”), Congress directed the Patent
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`Trial and Appeal Board (“the Board”) to “provid[e] for protective orders governing
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`the exchange and submission of confidential information.” 35 U.S.C. § 316(a)(7).
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`Thus, “[t]he Board may, for good cause, issue an order to protect a party or person
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`from disclosing confidential information . . .” 37 C.F.R. § 42.54(a). In Argentum
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`Pharmaceuticals LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 (PTAB
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`Jan. 19, 2018), the Board set forth the standard for sealing confidential
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`information:
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`[A] movant to seal must demonstrate adequately that (1) the
`information sought to be sealed is truly confidential, (2) a concrete
`harm would result upon public disclosure, (3) there exists a genuine
`need to rely in the trial on the specific information sought to be sealed,
`and (4) on balance, an interest in maintaining confidentiality
`outweighs the strong public interest in having an open record.
`
`Id. at 3. While there is a presumption in favor of public disclosure, and the burden
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`is on the movant to seal, application of the foregoing factors should be tempered by
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`reasonableness, which is the touchstone of good cause. Overly harsh or stringent
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`application of the “good cause” requirement would be contrary to Congress’ intent
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`that IPRs be conducted in a “timely, fair, and efficient manner” as an alternative to
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`5
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`
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`expensive court litigation of patent validity. Office Patent Trial Practice Guide, 77
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`Fed. Reg. 64280 (November, 2019).
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`As explained below, the Argentum factors confirm that the information BNR
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`seeks to protect from public disclosure should indeed be sealed in this proceeding.
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`A. Truly Confidential
`The license agreements and their contents are truly confidential. They are
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`not publicly available. Each party to those agreements considers the contents of the
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`agreements to contain highly sensitive business information regarding financial
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`and other terms that could adversely impact their ability to negotiate with others in
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`business transactions.
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`B. Concrete Harm from Public Disclosure
`The concrete harm that could result from public disclosure of the contents of
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`the license agreements includes at least that competitors or other adverse parties
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`could gain an unfair advantage over the party in business negotiations.
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`C. Genuine Need to Rely Upon the Confidential Information
`BNR relies on the confidential license agreements, among other evidence, as
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`evidence of secondary considerations of non-obviousness. The licenses are highly
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`probative on that issue and are not available from any non-confidential sources. As
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`a result, BNR has a genuine need to rely on that highly confidential information.
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`6
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`
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`1.
`Balancing
`The licensors’ and licensees’ need for confidentiality outweighs the public’s
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`interest in having a fully open record. BNR relies on the licenses, among other
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`evidence, to show secondary considerations of nonobviousness and should not be
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`forced to reveal its own and third party sensitive and business confidential
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`information (or be barred from using that relevant information) to fully defend this
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`proceeding. Further, BNR will submit redactions tailored to remove the
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`confidential information while revealing to the public as much as possible, striking
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`an appropriate balance of the public’s qualified interest in having an open record,
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`on the one hand, and the interest in maintaining the parties’ confidential
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`information in accordance with the proposed Modified Protective Order on the
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`other.
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`VI. CERTIFICATION OF CONFERENCE WITH OPPOSING PARTY
`PURSUANT TO 37 C.F.R. § 42.54
`As set forth in the Joint Motion for Entry of Modified Protective Order
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`(Paper 16), Counsel for BNR and Petitioner conferred previously regarding the
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`proposed Modified Protective Order submitted to the Board and that proposed
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`Modified Protective Order calls for and authorizes this sealing request. Since the
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`licenses and information referenced herein were designated Highly Confidential by
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`Broadcom, Huawei, as well as BNR, the information that is the subject of this
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`motion should be sealed.
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`7
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`VII. CONCLUSION
`For the above reasons, Patent Owner, Bell Northern Research, LLC,
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`respectfully requests that Exhibits 2024, 2025, and 2027 and a portion of Patent
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`Owner Response referencing their contents be treated as highly confidential
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`information and be placed under seal pursuant to the proposed Modified Protective
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`Order under the designation “PROTECTIVE ORDER MATERIAL –
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`ATTORNEYS EYES ONLY.”
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`8
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`
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`Dated: May 12, 2020
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`
`
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`
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`Respectfully Submitted,
`
`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`Lead Counsel for Patent Owner
`
`Alexander E. Gasser (Reg. No. 48,760)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6621
`Back-Up Counsel for Patent Owner
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Petitioner a true and correct copy of the foregoing Patent Owner’s
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`Motion to Seal Under 37 C.F.R. § 42.54, by electronic means on May 12, 2020 at
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`the following addresses of record:
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`Amol A. Parikh
`Charles M. McMahon
`Thomas M. DaMario
`Jiaxiao Zhang
`ZTEBNR-PTAB@mwe.com
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`Dated: May 12, 2020
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`
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`Respectfully Submitted,
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`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`Counsel for Patent Owner
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`
`
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